Fraud Sufficiently Pled by Citing to Earlier Fraud Decision

Posted on August 20, 2010 by R. David Donoghue

Golden Golf Lighting, Inc. v. Greenwich Indus., L.P., No. 07 C 1086, Slip Op. (N.D. Ill. Jun. 18, 2010) (Andersen, J.).

Judge Andersen denied defendant Clarin's Fed. R. Civ. P. 8(a), 9(b) and 12(b)(6) motion to dismiss this Lanham Act case regarding Clarin's allegedly fraudulent procurement of a trademark related to folding seats.

First, 15 U.S.C. § 1120 limited recovery to injuries sustained "in consequence" of a trademark registered by fraud or false reasons. The damages need not be to a trademark, as Clarin argued. Plaintiff's alleged damage because its folding chairs were seized at the U.S. border based upon alleged infringement of Clarin's trademark and plaintiffs allegedly lost business based upon the seizure. Those facts were sufficient to plead that Clarin was the proximate cause of plaintiff's alleged damages.

Plaintiffs pled fraud with sufficient particularity by incorporating by reference the fraud-related decision in Specialized Seating v. Greenwich Indus., L.P., 472 F.Supp. 2d 999 (N.D. Ill. 1999). Finally, Plaintiffs did not violate Fed. R. Civ. P. 8(a) or 8(d)(1) by combining two claims into a single count. Notice pleading did not require separate headings for each claim.

Tags: , , , , , , , , , ,
  • Email This
  • Print
  • Trackbacks
  • Share Link

Prior Patenting of Functional Trademark Invalidates the Mark

Posted on February 20, 2007 by R. David Donoghue

Specialized Seating, Inc. v. Greenwich Indus., L.P., 472 F. Supp.2d 999 (N.D. Ill. Feb. 2, 2007) (Holderman, C.J.).

Judge Holderman held declaratory judgment defendant's, Greenwich Industries ("Greenwich"), trademark invalid and held that Greenwich committed fraud on the USPTO while prosecuting its trademarks.  Declaratory judgment plaintiff, Specialized Seating ("Specialized"), and Greenwich are competing manufacturers of folding chairs.*  Greenwich has a trademark to a configuration of a folding chair with certain physical characteristics.  Because Greenwich secured patents for most or all of the features identified in its trademark, the Court held that Greenwich's trademark was functional and, therefore, invalid.  In addition to having held patents on the claimed features, Greenwich had also touted the functional benefits of the features in advertising.

The Court also held that Greenwich committed fraud on the USPTO because it only disclosed one of its four patents which covered functional elements of the claimed mark.  In a first Office Action the Examiner rejected the mark as functional and requested that Greenwich identify any patents that cover elements of the mark.  In response to that request, Greenwich disclosed only one of its four patents and distinguished it.  The Examiner rejected the mark again and posed interrogatories to Greenwich, which Greenwich answered without disclosing its three other patents.  The mark was ultimately issued on a Request for Reconsideration, without disclosure of Greenwich's remaining three patents.  The Court held that Greenwich deliberately misled the USPTO by not disclosing its other three patents during prosecution of its mark.

* Specialized's founder and president was previously the President of the entity that became Greenwich's folding chair business.  Specialized and Greenwich had a long history of litigation prior to this suit, which has all been resolved through various settlements or voluntary dismissals of suit. 

Tags: , , , , , , , ,
  • Email This
  • Print
  • Trackbacks
  • Share Link